The Registrar of Trademarks is not bound by strict Evidence Act rules, and Section 12 of the Trade Marks Act allows concurrent mark registration when honest use is evidenced, particularly where territorial limitations effectively prevent consumer confusion.

JUDGMENT :

SENTHILKUMAR RAMAMOORTHY, J.

1. The appellant was the opponent before the Registrar of Trade Marks in relation to an application filed by the second and third respondents for registration of the following device mark:

Such opposition was rejected by order dated 11.09.2024, which is impugned herein, and the above mark was registered as Trade Mark No. 1831646 in Class 30.

2. The contentions of learned counsel for the appellant, Mr.Adarsh Ramanujan, may be summarised as under:

(i) The second and third respondents failed to establish the user claim in respect of Trade Mark No.1831646. The partnership deed filed by said respondents evidences that the partnership firm under the name and style of ‘Shankar Industries’ was set up in 1992. It does not qualify as evidence of use of the trade mark since 1992. The certificate of the Chartered Accountants also does not qualify as evidence of use of the trade mark. The certificate does not refer to or enclose the underlying documents on the basis of which such certificate was issued. The Chartered Accountants have failed to even affirm an affidavit in respect of the alleged sales turnover and advertisement expenses mentioned in the certificate. The second and third respondents also failed to file invoices evidencing sale from 1995 – 1996, which is the first financial year for which turnover details are set out in the certificate. The invoices filed by the second and third respondents do not contain any evidence of use of the registered device mark. The earliest of these invoices is from the year 2002.

(ii) The impugned order records that the appellant had adduced evidence of use since 1992. Therefore, the appellant’s use clearly pre-dates use by the second and third respondents.

(iii) The onus was on the second and third respondents to establish that their use was honest and concurrent. The judgment of the Bombay High Court in Kores (India) Limited v. M/s Khoday Eshwarsa & Son and another, 1984 SCC OnLine Bom 65, particularly paragraphs 13 to 19 and 23, is relied upon in support of the requirements of Section 12 of the Trade Marks Act, 1999 (the TM Act). The impugned order made reference to the Chartered Accountants' certificate and a certificate issued by Sales Tax authorities and the Small Scale Industries Department and recorded a finding that the second and third respondents are entitled to the benefit of Section 12 of the TM Act. Said conclusion is not supported by cogent reasons.

(iv) The conclusion in the impugned order that there is a vast difference between the appellant's mark and that of the second and third respondents is not supported by reasons. No effort was made by the first respondent to compare the marks of the appellant with those of the second and third respondents before drawing such conclusion.

(v) Even without considering the fact that the appellant applies the mark in relation to atta, by drawing reference to the Nandhini Deluxe case, an erroneous conclusion has been recorded that the proprietor of a trade mark cannot enjoy monopoly over the entire class of goods.

(vi) The registration of Trade Mark No.460314 by the second and third respondents does not qualify as evidence of use of Trade Mark No.1831646. Even the withdrawal of the rectification petition relating thereto does not disentitle the appellant from challenging the registration of Trade Mark No.1831646.

(vii) The addit